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A Look Back at the Developments in Copyright Laws In the year 2020

While the world grappled with the Covid-19 pandemic and its effect, the Indian judicial setup kept steady with courts functioning virtually and providing relief in urgent matters, although a few matters were adjourned and filing dates were postponed. This year, therefore, continued to witness fascinating cases in the field of Intellectual Property, especially with respect to Copyright and disputes related to cinematographic films released on OTT platforms. We bring to you the key Copyright related updates in India for one of the most overwhelming year of the decade.

1. Legislative Developments

Notification by the Copyright Office Seeking Inputs: Amendments to Copyright Act, 1957

The National Association of Software and Service Companies (NASSCOM) had issued a notification informing the industry stakeholders that the Copyright Office was seeking comments on any suitable amendment that needed to be carried out to the Copyright Act, 1957, keeping in view the technological advancement and increased use of internet and digitalization.

IPAB’s Notice on Fixing Royalty for Radio Statutory License

The IPAB, on an application made by Music Broadcast Ltd. and other “radio” broadcasters, had issued a notice communicating its intention to fix royalties for the broadcasting of copyrighted content through radio and had sought suggestions from owners of Copyrights, any broadcasting organization, radio broadcaster or any other interested persons regarding the same.

NDLI Published a Draft of India’s First Copyright Guide for Indian Libraries.

The National Digital Library of India (NDLI), a project under the Ministry of Education that seeks to provide access to educational content available in digital libraries across the globe, issued a draft Copyright Guide for Indian Libraries. The guide has been prepared to ensure access to content by the end-user and protect the rights of the knowledge creators at the same time. The guide lists down the obligations of the librarians that would mitigate their chances of receiving alleged copyright infringement notices and ensure the smooth functioning of the libraries.

Public Notice issued by Copyright Office w.r.t. the lockdown

The Copyright Office also issued a public notice dated 16 March 2020, which stated that all copyright matters which were listed from 17 March 2020 to 31 March 2020 had been adjourned and the same were to be rescheduled at a later date.

2. Case Laws

A quick rewind on the prominent judgments of the year:

Sameer Wadekar & Anr. v. Netflix Entertainment Services Pvt. Ltd. (2020 SCC Online Bom 659)

The plaintiff sought an interim injunction against the release of the web-series “BETAAL” on the ground that he noticed at least 13 similarities between the web-series and the Plaintiff’s script titled “VETAAL”. The Bombay High Court refused to restrain Defendant from releasing the web series on the ground that there existed only similarities in the concept of the two works and not in the theme, plot and storyline. It was reiterated that copyright subsists only in the expression of an idea and not on the idea itself. The Court also noted the fact that while Plaintiff claimed his work was original, he failed to establish that the defendant had access to the Plaintiff’s work, which is paramount to determine claims of plagiarism.

Vinay Vats v. Fox Star Studios India Pvt. Ltd. & Anr.

The Plaintiff approached the Delhi High Court seeking an interim injunction against the release of the movie Lootcase which the Plaintiff claimed to be a copy of his script for the film Tukkaa Fitt. Much like in the case of BETAAL and VETAAL, the Court ruled that copyright does not subsist in the idea itself, but it is confined to the expression of the idea. The Court observed that the plot cannot be the exclusive ownership of the Plaintiff as it can be expressed in a number of ways. Moreover, since the Defendant’s work had considerable dissimilarities from the Plaintiff’s work, the Court refused to grant any relief to the Plaintiff.

Zee Entertainment Enterprises v. Ameya Vinod Khopkar & Ors.

The Plaintiff sought an ad-interim injunction against the release of the film “De Dhakka 2” on the ground that it had been assigned the negative rights in the original film “De Dhakka” by the original creator. The Bombay High Court refused to entertain the plea since the assignment deed pertained only to the original work and the right to adaptation and reproduction in the form of a sequel or prequel had not been assigned to the Plaintiff. The Court also observed that the script, screenplay, concept, were considerably different from the original work, making it an independent and separate work.

Jagran Prakashan Ltd. v. Telegram FZ LLC & Ors

The Plaintiff, a well-known Hindi language daily newspaper offering news content via print and digital circulation, sued Telegram, a Dubai based instant messaging app for the unauthorized circulation of the Plaintiff’s e-paper in PDF form by several unidentified users of the Defendants, thereby infringing upon the trademark and copyright subsisting in the said e-paper.

It was the case of the Plaintiff that several channels and usernames containing the term “Dainik Jagran” were created in the Defendant’s Platform and the users stared circulating pdf copies and e-article from the Plaintiff’s website. Plaintiff further contended that the Defendant, as an intermediary, failed to discharge its duties of due diligence, when it permitted reproduction, adoption, distribution, transmission and dissemination of Plaintiff’s content.

The Delhi High Court, agreeing with the Plaintiff’s submissions ruled that the Defendant had failed to exercise due diligence, which required the Defendant to block the unidentified users within 36 hours of being aware of such infringing acts of the users. Hence, the Court ordered an ad-interim injunction against the Defendant for causing severe financial loss to the Plaintiff and infringement of trademark and copyright held by the Plaintiff due to the illegal circulation of the content of the e-newspaper.

Super Cassettes Industries Private Limited and Ors. Vs. Nandi Chinni Kumar and Ors

Defendant No.1, a soccer player entered into an agreement with the Plaintiffs, a music label and film production company, allowing them to produce a biography on him, for valuable consideration. Following this, the Plaintiff registered the script of the movie along with the title “Slum Soccer” with the Telangana Cinema Writers Association. Soon after the registration of the script with the Writers Association, the Plaintiff came across the story “JHUND” which was the storyline of the Coach (Defendant 2) of Defendant 1.

To restrain the Defendants from proceeding with the production of the infringing movie “Jhund”, the plaintiff filed a suit of injunction on the ground that continuing with directing the film would constitute copyright infringement since he owned the concept, thought, characterization, image, identity and expression of the life story of Defendant 1.

After watching the teaser of the Defendant’s movie “Jhund” the court observed prominent similarity in the plot, depiction and story with the registered script of “Slum Soccer”.Therefore, the Telangana High Court through its order dated October 19, 2020, restrained the telecast of the Amitabh Bachchan starrer ‘Jhund’ across India and abroad. The Defendants, aggrieved by this order, preferred an appeal before the Supreme Court, which agreed with the observation made by the subordinate court and refused to lift the stay ordered by the lower court. The case has brought up a significant issue with respect to whether true life events of a real person who is already in the public domain can be considered ‘property’ and whether the same would be entitled to copyright protection.

Microsoft Corporation and Ors. vs. Satveer Gaur and Ors

Microsoft Corporation, along with Adobe Systems and Quest Software (Plaintiffs) filed a suit of infringement before the Defendants, a company named ‘Chetu’ offering IT Services. It was the case of the Plaintiffs that the Defendant was using the unlicensed software programs of the Plaintiffs on its computers and offered the duplicated copies of the programs for sale, thereby causing incalculable damages to the Plaintiff’s Intellectual Properties and hard-earned goodwill.

The Delhi High Court found this an open-and-shut case since infringing copies of the Plaintiff’s software were confiscated from the Defendants, and the Court passed a decree in favour of the Plaintiff. Even though this may sound like a usual day at work for software giants fighting piracy and copyright infringement, cases like this speaks volume of the need for actions beyond just statutory and judicial remedies to tackle piracy. In the ever-growing technology-driven world, it would take a handful of clicks to illegally appropriate, reproduce, and sell software, making the author’s copyright and human labour employed behind it, fruitless.

Shivani Tibrewala vs. Rajat Mukherjee and Ors.

In yet another case of alleged plagiarism, the Hon’ble Mumbai High Court ruled that copyright does not subsist on the mere idea, but only on the expression of such an idea. The Hon’ble Court refuted the Plaintiff’s claim that the Defendant’s work “Umeed” was a substantial reproduction of her script of the play “The Laboratory” on the ground that, apart from the theme i.e., the malpractice of unethical drug testing on poor and needy individuals by pharmaceutical companies without obtaining informed consent of such individual, there was nothing in the two works which could be termed as similar.

Giant Rocket Media and Entertainment Pvt. Ltd. vs Ms. Priyanka Ghatak And Ors

Whether a true story written in a book by one of the Defendant qualifies to be considered “Original” under the requirement of the Copyright Act?

The above issue was considered a primary issue when the Plaintiff filed an infringement suit against the Defendants seeking an injunction and an ex-parte order against the Defendants. Defendant No.3 was a retired joint commissioner of CBI who was the author of the book “CBI Insider speaks: Birlas to Sheila Dikshit”, from which the Plaintiff wanted to use Chapter 7 i.e., the story of the murder of Syed Modi, and turn it into a web-series and had also sought the permission from Defendant No.3. The Plaintiff claimed that Defendant No.2 had infringed on the same idea with the help of Defendant No.1 and 3.

The court opined that since the story covered in Chapter 7 is a true story that was already a part of the public domain, the same would not have qualified as original work. However, the court was of the view that the Plaintiff cannot claim exclusive rights over the contents since it was merely a narration of the crime and prosecution. The court concluded that neither the Plaintiff has a prima facie case to seek an injunction nor did the Defendants act in a fair manner. The Delhi High Court dismissed the appeal for an interim injunction against the web-series released by Defendant No.2 and vacated the ex-parte ad-interim order.

Conclusion

The year 2020 has been yet another busy year for the music and film industry, with the Courts flooded with claims of plagiarism and copyright infringement. However, courts have been deeply disappointed to find out that a couple of those cases lacked bonafide intention from the litigants since they approached the Courts in the “eleventh hour” to seek an injunction. As we look towards 2021, we expect that copyright, music, and entertainment disputes will continue to yield decisions on such important issues as the “originality” in works based on true life events, a yardstick of difference in expression of the same underlying idea, and the need for a better regime to tackle piracy in the fast-paced digital world.

The year 2020 has been yet another busy year for the music and film industry, with the Courts flooded with claims of plagiarism and copyright infringement. However, courts have been deeply disappointed to find out that a couple of those cases lacked bonafide intention from the litigants since they approached the Courts in the “eleventh hour” to seek an injunction. As we look towards 2021, we expect that copyright, music, and entertainment disputes will continue to yield decisions on such important issues as the “originality” in works based on true life events, a yardstick of difference in expression of the same underlying idea, and the need for a better regime to tackle piracy in the fast-paced digital world.

Image Credits: Photo by Markus Winkler on Unsplash

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Trademark Bullying: A Legal Means to Illegal Ends

The law of Trademark Protection was developed to grant exclusive proprietary right to Trademark owners, the monopoly of the Trademark owners over their trademarks and safeguard the collective goodwill. In a nutshell, Trademark Protection originated to restrain the sale of counterfeit products under an existing reputed brand name, but what happens when the same owners who are protected go above and beyond their legal capacity to protect their mark? The exact term for such an act is “Trademark bullying”.
Off late it has become a persistent problem with big companies, whereby they try to strong-arm small enterprises for business gains. Proprietors having high stakes go out of their way to protect their marks, even though the target entities do not use marks that are remotely similar to theirs. When a proprietor becomes an aggressive protector of his Trademark, lines between actual infringement and absurd contestations blur. To understand whether the same is bullying or an actual trademark infringement we will have to understand what constitutes bullying and the subtle difference between infringement and trademark bullying.

Definition & Ingredients

Definition of Trademark Bullying
The United States Patent and Trademark Office (USPTO) has defined trademark bullying as “the act where the trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.”1 The practice of a proprietor being overprotective of their mark and enforcing trademark rights beyond the required limit and scope of trademark law is called Trademark Bullying. 2 For instance when a powerful company or a big MNC like Amazon or Apple, that has immense funds, files a suit against local or smaller companies for infringement. Legal proceedings have a humongous cost attached to them and cannot be afforded by everyone. A small company that does not have adequate finances to fight a legal battle tends to budge under the influence of these powerful companies and give up on using their mark along with the products and services used under the mark, which they are legally entitled to. However, these threats are more than often groundless and baseless.

The course of action for entities that suspect infringement should be to verify whether the rival mark is actually similar to the proprietors’ mark. The next step would be to understand the trade circle, the market area and the similarity in the goods and services and further understand whether there is actual infringement or dilution. Similarly, one needs to determine whether there is a likelihood of confusion that might arise when a man with average intelligence looks at the rival marks. After the conclusion of the said due diligence, the proprietors would be in a position to understand whether they need to proceed with a legal action.

Who is a Trademark Bully and What Constitutes Trademark Bullying?
Various elements are to be considered before concluding whether it is a good faith trademark enforcement or bullying. A bully is someone who crosses the outer limit of “likelihood of confusion” en route to its trademark enforcement by prosecuting proprietors that are using an allegedly similar mark for non-competitive goods and services. In the case of deceptively similar marks and competitive goods and services, any act of aggressive enforcement will fall within the ambit of good faith litigation, and it holds true even if the mark is relatively weak but the market segment is competitive. Likewise, when owners of dissimilar marks enforce their rights against marks in the use of non-competitive goods, it is trademark bullying. But what happens when the owner of deceptively similar marks tries to enforce their rights against non-competitive goods and services? The owners in such scenarios seek to rely on the related goods or complementary goods doctrine, which tries to establish a link between two non-competitive goods. Since such links are difficult to establish, the enforcers usually rely on unfounded claims of “famous and well-known trademark”.

Modus Operandi of Bullying and the Effect on Small Entities Big companies have been observed to follow a similar pattern when they try to eradicate their competition out of the markets. They send out a common cease and desist notice which contains threats in legal language alleging trademark infringement and dilution. They also mention that they have been successful in prosecuting other enterprises using similar trademarks and then initiate either opposition proceedings or rectification proceedings against the small enterprise.3

The effect on the small enterprises that do not have any economical or legal support is they sit for a settlement wherein they are asked to withdraw their marks and the same is accepted by the small enterprises. The small enterprises tend to incur a huge financial cost of rebranding, removal of products from the markets, and loss of reputation because of the suit.

Comparative Analysis of Judicial Approach to Trademark Bullying in India and the US

The Approach by US Courts
While in India the cases which surround the issue of trademark bullying are still fewer, the instances are much higher in the United States. Here are a few cases that helped the courts of the United States to look at the situation of trademark bullying from a different perspective.

In Monster v. Vermonster, the manufacturer of a renowned energy drink “MONSTER”, Hansen Beverage Co., sent a cease-and-desist notice to Rock Art Brewery for using “Vermonster” to market its brewed beer. Rock Act Brewery was a small company that sold its beer in a few states in the United States of America. Hansen asserted a likelihood of confusion over the term Vermonster for beer and Monster for an energy drink.

Even though the marks were completely dissimilar and unique in their own way, Rock Art was asked to comply with the notice, however, the proprietors of Rock Art stood against the bullying and issued a public statement and started advertising as well as marketing their product. They also took to social media which persuaded Hansen to back down and come to a settlement.4

After this particular case the U.S. Commerce department in coordination with the USPTO came up with a report which addressed the wrongful harassment of small entities by big companies.5

In Apple v. Prepear, Apple being a leading producer and seller of electronic products tried to manipulate a small entity – Prepear, a recipe sharing application, into letting go of their mark. At the outset, the logo of Prepear and Apple are pretty distinctive with Prepear having a drawing of a pear outlined in green against a white background and leaf facing downward and the logo of Apple being a half-eaten apple with the leaf facing upward. Further, the goods and services provided were also dissimilar.

Prepear took to social media to fight against the bullying and shared how Apple had managed to do the same with other entities who has created a fruit logo. Prepear also stated that they had to let go of various employees because they could not afford their pay alongside defending the costly suit. Although this case has not been decided yet, it is clear that both the logos are dissimilar, and the goods and service offered are also distinctive therefore there should be no cause of confusion for any man with average intelligence. Nonetheless, the factors that are to be taken into consideration while deciding whether there is a plausible infringement or bullying are fairly obvious.

Indian Jurisdiction
Indian legislators had forethought the possibility of such misuse and provided a viable resolution under section 142 of the Trademark’s Act, 1999 which outlines the law against groundless legal threat.

The provision states that when a person through circulars, advertisement, or otherwise threatens another person with an action or proceeding for infringement of a registered or alleged to be registered trademark, the aggrieved person may bring a suit against such person and obtain a declaration to the extent that such threats are unjustified.

The available legal remedy for such threats is that an injunction may be issued in favour of the aggrieved party to restrain the other person from the continuance of such threats and also to recover damages. This remedy is available for only those whose trademarks are registered.

One of the first case that may be identified as bullying in India is Milmet Oftho Industries and Ors v. Allergan Inc [(2004)12 SCC 624], wherein the Indian Pharmaceutical company Allergan sold a drug named ‘Ocuflux’. The Appellant, an international pharmaceutical company sold a drug with a similar name in different countries and therefore sought a passing off suit against Allergan. The Supreme Court held that “if multinational companies do not have any intention of coming to India or introducing their products in India, they should not be allowed to throttle Indian Companies if the Indian Company has been genuinely using their mark in India and developed the product and was the first in the market”.

Another notable case is Jones Investment Co v. Vishnupriya Hosiery Mills [2015-4-L.W.30], where the Appellant was an American company which had been using the trademark ‘Jones New York’ internationally for manufacturing and producing clothing, hosiery and footwear. The respondent on the other hand was a small textile firm based in Erode, a city in Tamil Nadu. The Respondent had filed an application for their mark ‘Jones’ in relation to the textile products, which was opposed by the Appellant and the Registrar of Trademark had dismissed the same which gave rise to an Appeal.

The Appellants contended that they had transborder reputation and that the respondents did not have enough sales of their products and therefore, would not be able to compete with the Appellant. However, the IPAB took a similar stand which was taken by the Supreme Court in the previous cited case and stated that “a multinational company cannot claim infringement of trademark by a local Indian company purely based on international presence, unless they can expressly establish that their presence extends to India or precedes that of the Indian company.”

In a similar case of Bata India Limited Vs Vitaflex Mauch GmbH (CS(OS) No. 1112/2006), wherein the plaintiff instituted a case against the defendant for restraining them from making baseless groundless threats of legal proceeding. The main question that the court had to deal with was whether the legal notice sent by the defendant amounted to a legal threat and if the plaintiff was entitled to injunction and damages. The Delhi High Court held that the legal notice amounted to threat and the same was unjustifiable, therefore, the defendants were ordered to restrain themselves from issuing any further baseless threats.

The recent spat between BigBasket and DailyBasket is the latest example of prevalence of Trademark Bullying in India. BigBasket slapped DailyBasket with a cease-and-desist notice directing DailyBasket to (1) Stop business operation under the trademark “Daily Basket” and the domain name dailybasket.com ,and transfer the same to Big Basket; (2) discontinue the mobile application; (3) discontinue use of similar domain or trademark with the term “Basket” as a dominant feature of the domain name or the trademark; and lastly, (4) Pay INR 2,00,000.00/- as legal fees. This would be a fit case of bad faith enforcement, since the term “Basket” can be easily regarded as a term common to trade, and hence any proprietor in the trade of consumer goods is free to use it.

Although India had already made a provision for such threats, the act does not clarify what amounts to groundless and baseless threat. However, the above judgments decided by the Court and IPAB are clear on a few elements including whether the marks are actually similar and cause confusion, whether the international companies have an intention to bring their product into the country, first to use over first to file, etc. which have been taken into consideration when assuming if the same is to be considered as bullying or infringement. The Indian judiciary has not second guessed in slamming MNC’s and other powerful companies when it was clear that the local businesses were being wrongly and illegally affected by the infructuous cease and desist notice being sent to them.

The Road Ahead
Every legal notice of cease-and-desist would not amount to trademark bullying. The dynamics of each case are different, making the court re-think every scenario and look-out for the issue of trademark bullying or to check whether the plaintiff is seeking an injunction to avoid the actual consequence of an infringement. The primary purpose of the provision under the trademark act was to make sure that small entities and local businesses do not lose out on what they are legally entitled to own. However, there are ways in which the issue could be further curbed i.e. by providing resources to small entities including legal aid camps, creating awareness, law firms taking initiative and handling more pro bono cases etc. Small entities off late have sought some respite by resorting to social media wherein their plight is understood by a community of like-minded people who support through backlash at bigger companies which harms their reputation and goodwill gained over the years. While the laws in US on standard of proof for claims of trademark dilution shows a way to restrain trademark bullying on superficial claims of famous and well-known trademarks, the laws in India are still not clear on how far a litigant may go on such unfounded claims before being termed as a bully.
This article tries to explain what constitutes bullying and the subtle difference between infringement and trademark bullying.

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2020 In Rewind: Trademarks In India

The entrepreneurship space has seen major evolution with conducive policies and enabling technological environment in the past few years. Specifically, the digital landscape has levelled up in traffic and capabilities owing to the pandemic last year and everything moving online. With that, the intellectual property and technology laws are grappling to catch up to the developing situation and adequately protect the rights of the stakeholders in the sector. Until that happens effectively, the courts are taking a pro-active step to align the developments with the legal intentions and business requirements. With this in view, we witnessed some interesting case updates that took place in the field of trademarks and domain name disputes in the past year. Here is a brief of the key trademark-related updates in India that took place in the year 2020.

I.LEGISLATIVE DEVELOPMENTS

There was no significant legislative development in the trademark practice, apart from the Trademark Registry’s decision to go completely virtual with respect to prosecution hearings. The Trademark Registry and the Intellectual Property Appellate Board (IPAB) much like all the judicial and quasi-judicial bodies across the country, for the time being, has done away with the physical mode of hearing, and it is taking up matters via video conference.

II.SIGNIFICANT CASE LAWS

Here is a recap of key cases within the domain:

Amazon Seller Services Pvt. Ltd. & Ors. v. Amway India Enterprises Pvt. Ltd. & Ors. FAO(OS) 133/2019 |31-01-2020

In this case, the division bench of the Delhi High Court had set aside the lower court’s order restraining Amazon from allowing the sale of products of Amway India, a Direct Selling Entity, from its platform. Amway India filed a trademark infringement suit against Amazon on the ground that the e-commerce giant is liable as an intermediary for allowing and continuing to allow Amway India’s products (which it alleged were counterfeited products) to be listed on the former’s website by one of Amway’s direct seller. The lower court found Amazon liable for trademark infringement for non-observance of Direct Selling Guidelines and failing to demonstrate due diligence.   

The Division bench while setting aside the lower court’s order ruled that Direct Selling Guidelines are merely advisory to State Governments and Union Territories and they are not binding laws, and hence, it cannot be enforced against e-commerce intermediary. The Court further refuted the claim of trademark infringement on the ground that India follows the principle of international exhaustion of Trademarks, meaning once a good is lawfully acquired by the Direct Seller, the rights over the said good (including right re-sell) vested in the Direct Seller. Hence, Amazon as well as the seller were saved under the second sale exception to trademark infringement under section 30 (4) of the Trademarks Act, 1999.

Imagine Marketing Pvt. Ltd. V. Exotic Mile (CS(COMM) 519/2019) | 21-01-2020

The Plaintiff, commonly known in the market as “BoAt”, consumer electronics brand, sought an injunction against the Defendants from using the mark “BOULT” for the manufacture and sale of electronic audio gadgets mainly earphone, headphones, etc.

The Delhi High Court (single bench) had passed an interim injunction restraining the Defendant from using the mark “BOULT” ruling that it was deceptively similar to “BoAt” and that even their taglines were similar to each other. However, the Division Bench ordered a stay on the injunction order by stating that “prima facie there is no similarity visually or phonetically between the original Plaintiff and the Defendant.”

The matter is now evenly poised, and we await to see if the Division Bench would have a different take on its opinion after hearing the arguments.

Reckitt Benckiser (India) Pvt. Ltd v. Mohit Petrochemicals Pvt. Ltd. CS(COMM)No.141/2020 & I.A.Nos.4034-37/2020 | 28-05-2020

In an infringement suit filed by Reckitt Benckiser, the Delhi High Court while imposing Rupees One Lakh on Mohit Pharmaceuticals, permanently restrained them from selling hand sanitizers under the brand name “Devtol” which was considered deceptively similar to the Plaintiff’s well-known trademark “Dettol”.

M/s ITC Limited v. Nestle India Limited 2020 SCC OnLine Mad 1158 | 10-06-2020

ITC had launched its Sunfeast Yippie Noodles in two varieties – one of which was “Magic Masala”. Defendant i.e., Nestle had adopted the name “Magical Masala” for one of their instant noodle product. Since Plaintiff had not registered the expression “Magic Masala” as a trademark, it filed a passing-off suit against Defendant. Defendant affirmed that they were using the term “Magical Masala” as a flavour descriptor. The Defendants further contended that “Magic” and “Masala” were the two most common terms that were used in the culinary industry and therefore could not be monopolized.

The High Court of Madras held that the expressions “Magic” and “Masala” were common terms that were used on a day-to-day basis in the Indian food industry and Indian culinary, therefore the same could not be monopolized by the Plaintiff or the Defendant. The court further opined that even Plaintiff had used the term “Magic Masala” as a flavour descriptor rather than a trademark or a sub-brand. Therefore, the court concluded that ITC had used the term “Magic Masala” in a laudatory manner and the same could not be monopolized.  

Hindustan Unilever v. Endurance Domain and Ors. 2020 SCC Online Bom 809 | 12-06-2020

In this case, Plaintiff approached the Bombay High Court seeking to suspend domain names with Plaintiff’s HUL trademarks which were registered under the authority of Defendant, a domain name registrant. Even though the Court was quick to grant relief to the defendant, it opined that Domain name registrants were neither equipped nor authorized to indefinitely suspend domain names once registered, since there was no human element involved to oversee the legitimacy of domain names.

The Court ruled that deciding what should or should not be suspended (or blocked) is a serious judicial function that could be arrived at only by assessing and balancing rival merits. Moreover, the Court observed that anyone can use a VPN to bypass a proxy server or firewall and have access to such blocked websites by masking the originating country IP of the user, hence, such ‘access blocking’ only offers a hollow and faux sense of safety to the Registrant. Besides, holding the Registrar liable if he is unable to effectively block access would expose the Registrar to the constant threat of contempt proceedings.

International Society for Krishna Consciousness (ISKON) v. Iskon Apparel Pvt. Ltd and Ors. 2020 SCC Online Bom 729 | 26-06-2020

In a trademark infringement and passing off suit instituted against the Defendant’s use of ISKON APPAREL, the Court while restricting Defendant from using the same ruled that ISKON is a well-known mark. This was a follow-up to Plaintiff’s pleading that the trademark “ISKON” be declared a well-known trademark. Plaintiff submitted that it was the first to create the name in the year 1996 in New York and over time it has created a global presence which is inclusive of India and the brand was not restricted to only one particular good or service but was into the diverse range of goods and services. The court after scrutinizing the evidence submitted by Plaintiff ruled that the brand name “ISKON” fell under the ambit of a well-known mark under the Trademark Acts of 1999.

Louis Vuitton Malletier vs Futuretimes Technology India Pvt Ltd CS(COMM) 222/2020 | 03-07-2020

Louis Vuitton had filed a civil suit against the Defendants, an e-commerce platform named Club Factory to restrain the sale of any counterfeit goods comprising their trademark. The Plaintiff prayed that the Defendants be restrained from selling any product with Plaintiff’s trademark, including “LOUIS VUITTON”, “LV Logo”, Toile monogram pattern, Damier pattern and/or LV flower pattern, or any other similar pattern that would constitute an infringement of the Plaintiff’s registered marks. The Delhi High Court, acting on it, issued summon notice to the Defendants. We wait to see if this case takes the same route as the case of Amazon Seller Services Pvt. Ltd. & Ors. v. Amway India Enterprises Pvt. Ltd. & Ors. FAO(OS) 133/2019, to base the outcome on the evidence of counterfeited products or if it holds Club Factory liable in case the Defendant fails to demonstrate the minimum standard of due diligence as required from an intermediary. 

Arudra Engineers Pvt. Ltd. v. Pathanjali Ayurved Ltd. & Anr. 2020 SCC OnLine Mad 1503 | 17-07-2020

Defendant, Patanjali, was restrained from using the word “Coronil” to market its product i.e., immunity booster tablets which Defendant claimed to have passed the test of clinical trials to cure coronavirus. The Court held that since Plaintiff had acquired registration of the trademark ‘CORONIL- 92 B’ in 1993 and had been using the same in relation to Acid inhibitor for industrial cleaning, Defendant’s action amounted to infringement under Section 29(4) of Trademarks Act, 1999. The court also opined that Patanjali’s use of the word ‘Coronil’ could deceive the consumers with respect to the likelihood of curing coronavirus through the tablet. Hence, considering the reputation of Plaintiff’s registered trademark and the larger public interest, the Court restrained Plaintiff from marketing its product under the name “Coronil”.  

Plex, Inc v. Zee Entertainment Enterprises Limited 2020 SCC OnLine Bom 989 | 01-10-2020

The Bombay High Court refused to grant an interim injunction as sought by Plaintiff (Plex) against ZEEPLEX, a pay-per-view service launched by Zee. The Court reasoned that Plaintiff’s case of passing off failed the trinity test since it was unable to establish any reputation, the similarity in services, and anticipated injury due to the adoption and use of ZEEPLEX, while Defendant had a long-standing reputation in India.    

Delhivery Private Ltd. v. Treasure Vase Ventures Private Ltd.  CS (COMM) 217/2020 | 12/10/2020

In an infringement suit by the logistics company “Delhivery” against the user of the mark “Deliver-E” for identical services, Delhi High Court held that Delhivery was a generic name describing the kind of service it provided i.e., delivery, and hence, it did not have the characteristics of an enforceable trademark.

Anil Rathi v. Shri Sharma Steeltech CS(COMM) 654/2019 | 23-10-2020

The Delhi High Court ruled that the use of the personal name, surname, or family name under Section 35 of Trademarks Act, 1999 was limited to personal use only and such rights did not extend to granting licenses to third parties for commercial use. In the instant case, Plaintiff had approached the Delhi High Court seeking an injunction against the use of the surname “RATHI” as a trademark by Defendant. The Court observed that there was a family arrangement in place which regulated the use of the family mark, and the act of Defendant of licensing the mark to third parties was in clear violation of the said arrangement, making Defendant liable for trademark infringement.

The PS5 Case Trademark Squatting Case: TM Opposition by Sony Interactive Entertainment Inc [Opposition No. 1040632] against TM Application PS5 [Application No. 4332863] filed in Class 28 by Hitesh Aswani

Sony’s launch of its latest edition of gaming console Play Station 5 of PS5 in India was halted when it discovered that an infamous trademark squatter named Hitesh Aswani had surreptitiously filed a trademark application for “PS5” on October 29, 2020, for the identical specification of goods that were covered under Sony’s PS4 trademark registration bearing application no. 2481440. Sony, understandably, filed an opposition against the said trademark, and the Applicant withdrew his application.

Sony filed its earliest trademark application for the mark “PS5” in Jamaica before Hitesh Aswani on October 03, 2019. Sony used the Jamaican application as the basic application to file international registration through the Madrid Protocol, claiming priority of October 03, 2019.

This was a textbook case of trademark squatting. Sony had priority over the squatter, and it is a settled position of law that priority trumps everything else as per law in India. Further, the mala fide intention of the squatter was evident from the almost verbatim replication of the specification of goods covered under Sony’s PS4 trademark registration.

This case reached its logical conclusion when Hitesh Aswani withdrew his application as well as the opposition which paved the way for Sony to register its mark in India and proceed to launch the product in India.

Sassoon Fab International Pvt Ltd. v. Sanjay Garg & Ors. [IPAB] ORA/171/2020/TM/DEL | 04-12-2020

In one of the most noteworthy cases that came up before the Intellectual Property Appellate Board (IPAB), the registration of the mark ‘N95’ bearing App No. 4487559 registered in Class 10 in favour of Mr. Sanjay Garg was stayed. IPAB observed that the N95 was prima facie a generic term that was used to provide the quality of the masks hence it was hit by Section 9 of the Act. Since Plaintiff had filed a rectification petition against the registration of the said mark before filing the instant petition, IPAB deemed it necessary to stay the operation of the Registration until the Rectification Application was finally decided and disposed of.     

Gujarat Cooperative Milk Marketing Federation Ltd. & Anr vs. Amul Franchise.in & Ors CS(Comm) 350/2020

This case concerned fraudulent registration of multiple websites with the term “AMUL” as prefix/suffix. In this case, the Delhi High Court directed the Registrar of Domains to suspend/block domain names containing the term “Amul”. The Court also restrained the Registrar from the further offering for sale of such domain names so ordered to be blocked.

The Delhi High Court rejected the Registrar’s contention that due to lack of adequate technology it cannot ensure that these websites containing ‘AMUL’ therein would not be made available for sale and suggested that the Registrar could utilize the same filter it employs to ensure that websites under obscene and/or words denoting illegality are not available for sale. This decision is in stark contrast with an earlier single judge bench order of the Bombay High Court dated June 12, 2020 – Hindustan Unilever Limited v. Endurance Domains Technology LLP, 2020 SCC OnLine Bom 809wherein it held that Domain name registrants are neither equipped nor authorized to indefinitely suspend domain names once registered, since there is no human element involved to oversee the legitimacy of domain names.

CONCLUSION

Despite the majority of the judicial pronouncements being related to COVID-19 and lockdowns, 2020 will be the year that the Trademark Authority tightened its grip on trademark squatting, a way to curb the sales of counterfeit products on e-commerce platforms. Also, the IPAB’s order to put a stay on the registration of “N95” for medical equipment and apparatus exhibited the dismal examination standards at the Trademarks Registry since the term ‘N95’ is generic to medical products and no amount of use can justify the registration. We witnessed a handful of contrasting rulings in the year 2020 and a couple of disputes are lined up to be adjudicated in the year 2021. These are a few topics that are revisited time and again to not only protect the proprietors of the registered trademarks but also make sure that no defendant is being harassed unnecessarily by registered proprietors.  

 

Image Credits: Photo by Riccardo Annandale on Unsplash

Despite the majority of the judicial pronouncements being related to COVID-19 and lockdowns, 2020 will be the year that the Trademark Authority tightened its grip on trademark squatting, a way to curb the sales of counterfeit products on e-commerce platforms. 

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